The advent of technology, and social media in particular, has opened up myriad avenues for advertising campaigns across the globe. But with new opportunities come new risks: risks that any brand protection specialist must be aware of as they counsel clients or support their company on intellectual property (IP) protection issues in product launches, advertising, and social media campaigns.

Navigating the Risk Maze

Gustavo Giay, partner, Marval, O’Farrell & Mairal (Argentina), said: “Brands have become the key vehicles of competition at present, more than ever before. In a highly interconnected world, they interact with consumers in numerous and novel ways.”

As a result, he believes, brand lawyers must have a “broader understanding of risks in order to be able to not only identify traditional trademark risks, but also any other related risks that may potentially affect the value of the brand.”

In agreement, Michelle Renne, senior specialist–Marketing Properties, Mars, Incorporated (US), added: “The more you can learn about the areas that are tangential to what you’re working on—such as copyright, rights of publicity, domain names, social media, and advertising law—the better.”

While you do not have to be an expert on every facet of law beyond trademark law, being able to spot the red flags can be tremendously helpful.

Noted Michael Justus, partner, Katten Muchin Rosenman LLP (US): The point is that today’s ‘trademark counsel’ may be the only backstop who can spot many important legal issues beyond pure trademark law.

“It may not be necessary to be an expert in all of these areas—but at least spotting the issues and getting them in front of the right person to mitigate risk is key.”

The necessity of broadening your skillset is undeniable, but logistics may be more difficult.

Ms. Renne went to her line manager and requested training in advertising law, for example.

“I didn’t know what I didn’t know. I was terrified I was going to miss raising something to the right person because I might not recognize it as a claim or other advertising law issue,” she confessed.

After attending training programs on advertising law, Ms. Renne considers herself better able to identify potential issues.

She said: “The training has given me more confidence that I’m spotting more of the important issues. In my role, I’m often on the front line—the marketing team is one of my key clients. They don’t see me just as a trademark expert. They see me as part of the broader legal function, and with the training, I can better spot potential issues beyond trademarks and elevate to the appropriate subject matter experts.”

The career path of Clara Cottrell, senior counsel, Compliance & Privacy, BASF (US), is an excellent example of putting a holistic approach into practice. For years, she worked as an IP attorney before broadening her practice and entering the data privacy world.

“For most people, practices can change very organically. I like to think about it as working on the projects you like and with the people you like. As you get more of those projects, you get to work with those people more and your practice evolves,” she said.

While the process may be organic at first, Ms. Cottrell believes it then becomes the practitioner’s responsibility to work at developing awareness of these new areas and the associated risks, to provide the best counsel to clients and the company.

“Whether it’s trade organizations or taking Continuing Legal Education courses, you need to be looking for those resources and mentors in the field who you can bounce questions off and understand what’s going on,” Ms. Cottrell said. “That’s how you grow—it’s a combination of practical work and education.”

The brand specialist is not the only person who should be aware of potential pitfalls. Training across the company, including throughout the marketing and creative teams, is essential.

Legal teams can provide training to their business clients on trademark best practices, such as the importance of clearing trademarks in advance and working with social media influencers.

Noted Ms. Renne: “Legal practitioners are curious people, so embrace that as much as you can. Weave in opportunities for learning. Your clients and organization are going to appreciate it.”

The Million-Dollar Question

A lot of behind-the-scenes work goes on when producing a marketing campaign, and brand lawyers must be able to spot the big issues early. That is precisely why it is vital to consider data protection and privacy across the board, particularly in the advertising sphere. Fines for breaches of data rules regularly reach into the millions of dollars.

For those looking to develop their knowledge, Ms. Cottrell suggested to begin by considering the different government privacy regimes—such as the Personal Information Protection Law in China, and the General Data Protection Regulation in the European Union and the European Economic Area—because privacy laws are “all going to continue to grow and influence the rest of the world.”

In the United States, new laws in Colorado and Virginia—the Colorado Privacy Act (enacted July 2021), and the Virginia Consumer Data Protection Act (enacted March 2021)—may continue to influence how other states change their privacy regulations and perhaps also influence federal law.

According to Ms. Cottrell, these comprehensive data protection laws are not the only privacy rules when it comes to marketing and advertising. “Practitioners still must think about laws and consent for marketing, as well as anti-competition laws which greatly affect advertising and sometimes have privacy implications,” she said.

She cited the example of a U.S. lawyer who is shown a new marketing tool that asks people to sign up for text messages to receive more information about the product. That lawyer would need to make sure the company complies with the requirements of the Telephone Consumer Protection Act of 1991 for use in the United States.

Meanwhile, for electronic marketing and texting in Canada, a company must obtain marketing consent ahead of time, and, in Germany, a company also may need to consider anti-competition laws.

What happens if you plan to use a new tool such as this globally? How you manage these risks and competing regimes is the million-dollar question.

“You need a risk-based approach,” emphasized Ms. Cottrell. “In some situations, you, just like any other regime, can choose to follow the most restrictive regulations that apply, but other times that might not be what you do because it’s so restrictive.

“In this area, we have laws of such varying stringency that it might not behoove you to comply with the most restrictive when not required.”